The "Scheduled Marks" include "Doc's", "Dr Martens" in various forms, and the Geneva cross surrounded by the words "Dr Martens Air Cushion Sole". In view of the numerous occasions on which the trial judge stressed that the distinctive features could not be viewed in isolation from the branding, markings and labelling, we are unable to see in the passages relied on by the appellants an implicit finding that the distinctive features were themselves distinctive of the appellants' footwear.
18 Even if, contrary to our view, the trial judge did find that the distinctive features were themselves distinctive of the appellants' footwear, it would not avail them. On his Honour's findings he would necessarily have concluded that the respondents had discharged any onus that lay on them to show that their branding, markings and labelling removed the effect of the prima facie misrepresentation. On the view his Honour took there was no occasion to speak of onus. However, the respondents satisfied him that they had so branded, marked and labelled their footwear that any impression that a prospective purchaser may have had that the respondents' shoes might be Dr Martens footwear was removed before any sale took place.
Trade dress distinctive without branding
19 Our conclusion on the preceding contention makes it necessary to deal with the appellants' cautionary fall back position. We were not taken to any part of the evidence with a view to persuading us that the trial judge's finding that it was an artificial and arid exercise to isolate the distinctive features from their accompanying branding, markings and labelling was wrong. However we were given numerous references to evidence which was said to establish that the reputation of the Dr Martens footwear lay in the distinctive features independently of the branding, markings and labelling. The evidence falls into a number of categories:
(a) Twelve witnesses gave evidence to the effect that they associated Dr Martens branded footwear with its brand names or markings such as "Docs" or "Dr Martens" and the distinctive features, which they enumerated.
(b) Seven witnesses said that although the branding, markings and labelling of the Dr Martens footwear was important, the "look" of the footwear was more important. Other witnesses were invited to swear affidavits containing that statement, but obviously declined to do so since the relevant paragraphs of essentially standard form affidavits are crossed out.
(c) A few witnesses said that markings and the look were equally important.
(d) One witness said that the appearance and not the brand was the significant feature in the selling process.
(e) One witness said that the representation of the Dr Martens footwear was more attributable to the name than to the appearance.
(f) One witness said the brand "Original Dr Martens" was the key selling point.
(g) Several witnesses said that the yellow stitching was a feature or characteristic of Dr Martens shoes.
(h) Some witnesses expressed the view that in the absence of the distinctive features the footwear would not have much sales appeal.
20 The evidence summarised in (a), (b), (c), (e) and (f) supports the trial judge's conclusion that the appellants' reputation lay in a combination of the branding and appearance of the footwear and did not lie in its appearance alone. The evidence summarised in (g) and (h) does not impugn the trial judge's conclusion. The evidence summarised in (d) is the sole support for the view that the appellants' reputation lay in the distinctive features independently of the branding, markings and labelling. The evidence relied on by the appellants would alone have justified the trial judge's conclusion that it was the conjunction of the features and the branding, markings and labelling that constituted the appellants' reputation. On the evidence as a whole, the conclusion is the more justified. We refer in this connection to the evidence supporting the eighth, tenth and eleventh findings set out in paragraph 5.
21 The appellants submitted that the trial judge's conclusion reflected a confusion between the way in which a reputation is built up and the consequences of that reputation. It was submitted that a reputation is necessarily built up in the so‑called distinctive features in association with the branding, markings and labelling, because the public has to be taught that the distinctive features signify Dr Martens products. But once the reputation is built up in that way it subsists in the distinctive features alone. The submission was put as if it were a statement of general principle, whereas what is involved is a question of fact. A finding adverse to the appellants on the factual issue does not mean that the trial judge has confused concepts which are logically distinct.
Pre‑sale misrepresentation
22 The appellants contended that the trial judge should have held that the respondents' conduct in putting footwear with the so-called distinctive features into the market place amounted to a misrepresentation. It was said that by such conduct, potential purchasers were initially attracted to the products because they thought they were authorised or genuine Dr Martens footwear. It was said that once the respondents had made such a misrepresentation to all who saw the footwear, it was irrelevant that some persons whose interest was attracted to the footwear by the misrepresentation realised later, albeit prior to purchase, by reason of the respondents' labelling, that the respondents' footwear was not the appellants' footwear.
23 The starting point for this submission is a representation by the respondents deriving from their manufacture and distribution of footwear having the distinctive features but lacking the respondents' own branding, markings and labelling. That was not the representation the trial judge found the respondents had made. For that reason the pre‑sale submission must be rejected. But it has another difficulty. The fact situation to which this submission was directed was the display of a respondent's shoes on a shelf in a shop. Before examining the shoes the customer would notice some of the features associated with Dr Martens footwear - the yellow stitching for example ‑ and would be enticed thereby to examine them more closely. Although on that inspection the customer would realise the shoes were not Dr Martens, and would either leave the shop without making a purchase or purchase shoes the customer knew were not Dr Martens, this was irrelevant, because the earlier enticement constituted the false representation. In the course of argument this was described as the two step scenario. In our view it is unrealistic to divide up the transaction in this way. The only representation made was that constituted by the actual display that was made - shoes with their distinctive features, brands, markings, labelling and price. Acceptance of the appellants' contention would mean that a trader who displayed Meissen together with similar‑looking locally made porcelain in the same area of the shop would thereby falsely represent that the latter were Meissen so long as the customer was not sufficiently close to the goods to see the distinguishing brands and prices.
24 The appellants contended that the respondents' footwear, in the hands of retailers, was an "instrument of fraud". It enabled a retailer to "switch‑sell", that is to say, to sell an imitation or look‑alike as a Dr Martens shoe. There was no evidence of switch selling. Indeed the evidence was that there was no switch selling. Several retailers gave evidence that far from representing that the imitation or look‑alike was Dr Martens footwear, or had an association with Dr Martens, they explained to customers that the imitation or look‑alike shoes were not the original Dr Martens and were thus much cheaper. They engaged in this process in order to secure a sale. For example, Timothy Jackson, a retailer, dealing with a genuine Dr Martens shoe and a look‑alike at half the price, said:
"let us say we are pursuing a pair of $150 Doc Martens and then the mother has the audacity to actually [ask] how much they are and is told $150 and says: not on your nelly, nelly. We're not going down that path, thank you very much. Why are they so expensive and we say they're the original ones … and they tend to be that way as we immediately bring out the other one and say: however, mum, your problem is solved because we have the knock off and that's only $79.95 and she says: that will do me, Charlie, that's what you're getting."